We’ve referenced the Trademark Trial and Appeals Board (TTAB) in various posts associated to safeguarding your cannabis trademarks, but quite a few consumers come to me unaware of the functions of the TTAB. This post will give a simple rundown of what the TTAB does, and what the trademark opposition approach appears like. This approach is one thing we have handled for various consumers, each domestic and foreign, and is one thing that each and every trademark applicant need to be conscious of.
The TTAB hears two forms of proceedings: 1) ex parte appeals from denial of your application for registration by an examining lawyer, and two) inter partes opposition, cancellation, concurrent use or interference proceedings.
The latter, trademark opposition proceedings, will be the concentrate of this write-up. A trademark opposition is a proceeding in which one particular celebration seeks to protect against registration of an additional party’s trademark. If a celebration believes that it will be broken by the registration of a mark, it can file an opposition. The TTAB’s Manual of Process supplies guidance for TTAB proceedings, and the TTAB follows the Federal Guidelines of Civil Process.
Following application for a U.S. federal trademark, if an examining lawyer approves an application for publication, that application will be published for opposition for a period of 30 days. Through that 30-day opposition period, third-parties could file a Notice of Opposition with the TTAB, which starts the opposition proceeding. Through the opposition period, third-parties could also request extensions to file a Notice of Opposition, granting them more time to try settlement negotiations or commence the opposition approach.
An opposition proceeding with the TTAB is quite equivalent to litigation in federal or state court. The Notice of Opposition that ought to be filed by an opposer is equivalent to a complaint in that it states the factual background of the case, the grounds for opposition of the trademark application, and the request for relief. Any particular person who believes it is or will be broken by registration of a mark has standing to file a complaint.
The most often encountered situation in TTAB inter partes proceedings are claims for likelihood of confusion. Pursuant to the Trademark Act, a plaintiff/opposer ought to assert, and prove at trial, that the defendant/applicant’s mark, as applied to its goods or solutions, so resembles plaintiff’s previously applied or registered mark or its previously applied trademark name as to be probably to lead to confusion, error, or deception. The components of a claim of likelihood of confusion are as follows:
- Priority – a plaintiff ought to plead priority of use and
- Likelihood of confusion – we have written about this common prior to, and the variables applied in figuring out likelihood of confusion involve the similarity of the marks, the relatedness of the goods and/or solutions, the channels of trade and classes of purchasers for the goods and/or solutions, the quantity and nature of equivalent marks in use on equivalent goods, the nature and extent of any actual confusion, and the fame of the prior mark.
It is common practice of the TTAB to enable the defendant in an opposition proceeding 40 days from the mailing date of the notice of institution in which to file an answer. If no answer is filed inside the time initially set (or as could later be reset by the TTAB), the opposition could be decided as in case of default.
Hence, if you acquire a Notice of Opposition from the TTAB, it is important to seek the advice of with an lawyer right away to commence building your approach for your response. Likewise, if you notice that a trademark application is about to situation for a mark you think to be confusingly equivalent to your personal, seek the advice of with an knowledgeable IP lawyer to establish no matter whether you have standing to file an opposition. We count on to see these forms of proceedings skyrocket in the cannabis space as corporations are filing to guard their ancillary goods and solutions, and also when complete federal trademark protection is accessible for cannabis goods and solutions.